Trademark Law Update 1 General CLE credit ID 89530 (part of 86689) - Amazon S3
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Online CLE Trademark Law Update 1 General CLE credit ID 89530 (part of 86689) From the Oregon State Bar CLE seminar Intellectual Property Review—Updates and Changes from 2021, presented on February 18, 2022 © 2022 Christopher Erickson, Cassandra Mercer. All rights reserved.
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Chapter 1A
Presentation Slides: 2021 Trademark
Year in Review: TTAB Proceedings
Christopher Erickson
Tonkon Torp LLP
Portland, OregonChapter 1A—Presentation Slides: 2021 Trademark Year in Review: TTAB Proceedings Intellectual Property Review—Updates and Changes from 2021 1A–ii
Chapter 1A—Presentation Slides: 2021 Trademark Year in Review: TTAB Proceedings
2021
Trademark Year In Review:
TTAB Proceedings
Chris Erickson
Tonkon Torp LLP
© 2020 Tonkon Torp LLP | tonkon.com
TTAB CASES:
Inter Partes Proceedings
1. Chutter, Inc. v. Great Management Group, LLC /
Great Concepts, LLC
2. Philanthropist.com, Inc. v. The General Conference
Corporation of Seventh-day Adventists
3. The Coca-Cola Company v. Meenaxi Enterprise, Inc.
4. The United States Olympic Committee v.
Tempting Brands Netherlands B.V.
© 2020 Tonkon Torp LLP | tonkon.com
Intellectual Property Review—Updates and Changes from 2021 1A–1Chapter 1A—Presentation Slides: 2021 Trademark Year in Review: TTAB Proceedings
Chutter, Inc. v. Great Mgmt.
Group, LLC / Great Concepts, LLC
2021 USPQ2d 1001 (TTAB 2021) [precedential]
• Owner of DAN TANA’S trademark filed petition to cancel registration for
DANTANNA’S on the ground of fraud.
• Defendant’s attorney had filed Declaration of Use and Incontestability for
DANTANNA’S, declaring that “there is no proceeding involving said rights pending and
not disposed of either in the U.S. Patent and Trademark Office or in the courts.”
• At the time of filing the Declaration, there were in fact two pending proceedings
• In re Bose Corp. (2009): In USPTO trademark cases involving allegations of fraud, the
Federal Circuit has held that the intent to deceive must be “willful”
• In this case, the TTAB held that the lesser standard of “reckless disregard” satisfies the
requisite intent for fraud on the USPTO in trademark matters (and that the Defendant
acted with reckless disregard in filing the Declaration of Use and Incontestability)
© 2020 Tonkon Torp LLP | tonkon.com
Philanthropist.com, Inc. v. The General Conference
Corp. of Seventh-day Adventists
2012 USPQ2d 643 (TTAB 2021) [precedential]
• Petitioner sought cancellation of ADVENTIST® trademark registrations on the ground
that ADVENTIST is “generic” as to the registered goods and services
• Registrant moved for summary judgment, challenging Petitioner’s entitlement to assert
its claim (standing), as well as the merits of the genericness claim
• Petitioner was in the business of acquiring and selling domain names (including
Adventist.com) and this dispute arose from a UDRP proceeding filed by the Registrant
• “A plaintiff is entitled to a statutory cause of action by demonstrating a real interest in
the proceeding and a reasonable belief of damage”
• All Petitioner ever did with the Adventist.com domain name is to hold it for future sale
at an inflated price, or to redirect Internet users.
• TTAB denied petition to cancel on basis that Petitioner did not meet the standing
requirements
© 2020 Tonkon Torp LLP | tonkon.com
Intellectual Property Review—Updates and Changes from 2021 1A–2Chapter 1A—Presentation Slides: 2021 Trademark Year in Review: TTAB Proceedings
The Coca-Cola Company v.
Meenaxi Enterprise, Inc.
2021 U.S.P.Q.2d 709 (T.T.A.B. 2021) [precedential]
• Coca-Cola successfully petitioned to cancel Meenaxi’s U.S. registrations
for THUMS UP and LIMCA on the ground that Registrant misrepresented the source
of the goods on which the marks are used, under Trademark Act Section 14(3)
• Coca-Cola alleged that Meenaxi registered Coca-Cola’s “internationally famous
THUMS UP and LIMCA marks in a blatant attempt to deceive United States
consumers into believing that its soda products are the U.S. versions of the THUMS
UP and LIMCA products sold by [Coca-Cola] in India.”
• Section 14(3) requires that the respondent is deliberately passing off its goods as
those of another (not just willful use of a confusingly similar mark)
• TTAB held that reputation of Coca-Cola’s trademarks in India “would extend tot the
United States,” especially among significant population of Indian-American consumers
• Coca-Cola’s standing based in large part on trademark rights in India
© 2020 Tonkon Torp LLP | tonkon.com
The United States Olympic Comm.
v. Tempting Brands NL B.V.
2021 USPQ2d 164 (TTAB 2021) [precedential]
• USOC filed notice of opposition against application for PIERRE DE COUBERTIN (for
clothing and jewelry products) on the basis of “false suggestion of a connection” with
USOC and “the Olympic Games as a whole” under Section 2(a)
• Pierre de Coubertin was a 19th century French baron who is described as the “father of
the modern Olympics” – he founded the IOC, designed the Olympic Rings logo, etc.
• USOC did not own a U.S. registration for PIERRE DE COUBERTIN, but rather alleged
that Applicant’s use of PIERRE DE COUBERTIN “falsely suggested” a connection with
the USOC, given Mr. de Coubertin’s role in establishing the modern Olympics
• TTAB rules in favor of Applicant, rejecting the USOC’s claim on the general basis that
consumers do not view PIERRE DE COUBERTIN so closely with USOC that they
recognize it as USOC’s name, nickname, identity, or persona.
© 2020 Tonkon Torp LLP | tonkon.com
Intellectual Property Review—Updates and Changes from 2021 1A–3Chapter 1A—Presentation Slides: 2021 Trademark Year in Review: TTAB Proceedings
TTAB CASES:
Ex Parte Proceedings
1. In re Dolce Vita Footwear, Inc.
2. In re Dimarzio, Inc.
3. In re Taverna Izakaya LLC
4. In re Maugus Manufacturing, Inc.
© 2020 Tonkon Torp LLP | tonkon.com
In re Dolce Vita Footwear, Inc.
2021 USPQ2d 478 and 479 (TTAB 2021) [precedential]
• Applicant sought to register CLEAR for luggage and bag products in Class 18
• USPTO Examiner refused on the grounds that the mark is “deceptively misdescriptive”
of the goods
• Applicant’s goods are not transparent (and as such, claimed Applicant, CLEAR was not
merely descriptive)
• Refusal upheld because: (1) CLEAR is merely descriptive of Applicant’s goods in that
the public will believe that Applicant provides transparent bags; (2) it is plausible that
Applicant’s bags would possess such a feature because the evidence shows that clear
bags common; and (3) a reasonably prudent purchaser is likely to believe the
representation (implied by the word “clear”)
• TTAB unpersuaded by Applicant’s argument that consumers won’t believe the
misrepresentation because bags are displayed to potential buyers at the point of
purchase for visual inspection
© 2020 Tonkon Torp LLP | tonkon.com
Intellectual Property Review—Updates and Changes from 2021 1A–4Chapter 1A—Presentation Slides: 2021 Trademark Year in Review: TTAB Proceedings
In re Dimarzio, Inc.
2021 USPQ2d 1191 (TTAB 2021) [precedential]
• Applicant sought to register the color “cream” for electronic guitar pickups
• Examiner refused registration on the grounds that the Applicant did not show
that the color mark had “acquired distinctiveness”
• Applicant’s evidence included unpersuasive “fill-in-the-black” declarations and
use of the color mark since 1979.
• However, TTAB pointed out that long-time use of a supposed mark does not
alone establish acquired distinctiveness
• TTAB noted that Applicant’s use of the color cream on guitar pickups was not
exclusive, and that Applicant sold its products in a variety of colors
© 2020 Tonkon Torp LLP | tonkon.com
In re Taverna Izakaya LLC
2021 USPQ2d 1134 (TTAB 2021) [precedential]
• Applicant sought to register TAVERNA COSTERA for restaurant services
• USPTO Examiner applied the doctrine of foreign equivalents and refused
registration on the basis that TAVERNA COSTERA (translated to English as
“COASTAL TAVERN”) was merely descriptive
• However, the Applicant asserted – and the TTAB agreed – that “TAVERNA”
was an Italian or Greek word for “TAVERN” whereas “COSTERA” was a
Spanish word for “COASTAL.”
• TTAB holds that application of doctrine of foreign equivalents inappropriate
because consumers would not “stop and translate” marks comprised of terms in
multiple languages
© 2020 Tonkon Torp LLP | tonkon.com
Intellectual Property Review—Updates and Changes from 2021 1A–5Chapter 1A—Presentation Slides: 2021 Trademark Year in Review: TTAB Proceedings
In re Maugus Manufacturing, Inc.
2021 USPQ2d 1100 (TTAB 2021) [precedential]
• Applicant sought to register DRINK MORE BEER, for growler caps
• USPTO Examiner refused registration on the ground that it “fails to
function as a trademark.”
• TTAB affirmed the refusal.
• To be registrable, a proposed trademark must function as a source
indicator in the eyes of relevant consumers.
• Applicant’s specimens of use showed that it uses the trademark NNBC
to identify and distinguish the source of its growler caps; whereas
DRINK MORE BEER “merely identifies optional wording that may
appear on one of the products, or one of the available styles for the
product sold, under the NNBC mark.”
© 2020 Tonkon Torp LLP | tonkon.com
THANK YOU
Chris Erickson
chris.erickson@tonkon.com
503.802.2177
© 2020 Tonkon Torp LLP | tonkon.com
Intellectual Property Review—Updates and Changes from 2021 1A–6Chapter 1B
Presentation Slides: 2021 Trademark
Year In Review: Federal Courts
Cassandra Mercer
Lane Powell PC
Portland, OregonChapter 1B—Presentation Slides: 2021 Trademark Year In Review: Federal Courts Intellectual Property Review—Updates and Changes from 2021 1B–ii
Chapter 1B—Presentation Slides: 2021 Trademark Year In Review: Federal Courts
2021
Trademark Year In Review:
Federal Courts
Cassandra Mercer
14, Feb 14, 22 1 © 2022 Lane Powell PC
Brooklyn Brewery Corp. v. Brooklyn Brew Shop
17 F.4th 129 (Fed. Cir. Oct. 27, 2021)
• Brooklyn Brewery petitioned to cancel Brooklyn Brew Shop’s
(BBS) registration for BROOKLYN BREW SHOP for beer-making
kits, and opposed BBS’s pending application for BROOKLYN
BREW SHOP logo in for beers, other beverages, and beer-making
kits in class 32, and sanitizing preparations in class 5.
• TTAB denied petition for cancellation, and among other things,
denied Brewery’s opposition to sanitizing solutions.
• Brewery appealed; on appeal BBS argued Brewery does not have
Article III standing or statutory standing to appeal as to the
sanitizing solutions.
• Case of first impression for Article III standing and trademarks.
14, Feb 14, 22 2 © 2022 Lane Powell PC
Intellectual Property Review—Updates and Changes from 2021 1B–1Chapter 1B—Presentation Slides: 2021 Trademark Year In Review: Federal Courts
Brooklyn Brewery Corp. v. Brooklyn Brew Shop
• Court followed its patent cases in requiring Article III standing in addition to statutory
standing.
• “[T]he requirement of injury in fact is a hard floor of Article III jurisdiction that cannot
be removed by statute.”
• To establish injury in fact in a trademark case, an opposer must demonstrate a
concrete and particularized risk of interference with the rights that flow to it from
registration of its own mark, or some other Article III injury. … [for example that]
registration and use of the mark would cause the opposer concrete and particularized
harm.”
• “[T]he issue for likelihood-of-confusion or descriptiveness purposes is typically
whether the challenger and registrant compete in the same line of business and failure
to cancel an existing mark, or to refuse registration of a new mark, would be likely to
cause the opposer competitive injury.”
• Bold text show changes made to Oct. 27,2022 opinion in errata issued Jan. 18, 2022
14, Feb 14, 22 3 © 2022 Lane Powell PC
Piano Factory Grp., Inc. v. Schiedmayer
Celesta GmbH
11 F.4th 1363 (Fed. Cir. Sept. 1, 2021)
• Defendant in cancellation proceeding lost at TTAB and appealed, arguing, inter alia, that
the administrative trademark judges (ATJ) of the TTAB are unconstitutionally appointed.
• After arguments were filed, Arthrex issued regarding PTAB.
• Trademark Modernization Act specifically affirmed that Director of USPTO has authority to
review TTAB decisions.
• However, even before TMA, the Lanham Act had no statutory restraints on the Director’s
authority.
• In 1999, the IP and Communications Omnibus Reform Act removed the requirement that the TTAB sit
in panels of 3 judges, and specified that the Director is a member of the Board
• Section 18 of the Lanham Act has long granted the Director broad authority to refuse to register a
mark or cancel a registration
• Arthrex created a regime for the PTAB similar to what was already in place for TTAB before the TMA
14, Feb 14, 22 4 © 2022 Lane Powell PC
Intellectual Property Review—Updates and Changes from 2021 1B–2Chapter 1B—Presentation Slides: 2021 Trademark Year In Review: Federal Courts
Soc. Techs. LLC v. Apple Inc.
4 F.4th 811 (9th Cir. July 13, 2021)
• Apple filed petition for cancellation against Social Technologies at TTAB; Social
Technologies then filed trademark infringement suit against Apple in N.D. Cal. District
Court entered summary judgment for Apple; Social Tech appealed.
• Apple argued Social Tech’s registration was invalid, won on summary judgement, Social
Technologies appealed
• Social Tech had earlier filing date, promotional activities, internal investment, and use
(5,000 downloads), but also evidence of intent to use registration to sue Apple
• Court considers the totality of the circumstances to determine whether the “use in
commerce” requirement has been satisfied
• “While at the time of its original intent-to-use filing, Social Tech may have had some
commercial intent to develop the Memoji application, at the time it filed its Statement
of Use, its use of the MEMOJI mark was ‘made merely to reserve a right in the mark.’”
• “The totality of the record permits only one conclusion: that Social Tech's continued
pursuit of trademark registration with the USPTO was based on token use for the
purposes of reserving its trademark rights.”
14, Feb 14, 22 5 © 2022 Lane Powell PC
Functionality Cases on Petition for Writ of Certiorari
Ezaki Glico Kabushiki Kaisha v. Lotte Int'l Am. Corp., 986 F.3d 250 (3d
Cir.), as amended (Mar. 10, 2021), cert. denied sub nom. Kaisha v. Lotte
Int'l Am. Corp., 142 S. Ct. 420 (Nov. 1, 2021)
• Petition for Rehearing filed on Petition for a Writ of Certiorari, Nov. 23, 2021
• Request to vacate Court’s order denying cert and hold the petition until the Court’s
final disposition of Sulzer Mixpac AG v. A&N Trading Co. et al., No. 21-417
• Sulzer Mixpac AG v. A&N Trading Co., 988 F.3d 174 (2d Cir. Feb. 18,
2021)
• Response requested Nov. 8, 2021; briefing in progress
• A&N Trading Co. brief in opposition of cert filed Feb. 7, 2022
14, Feb 14, 22 6 © 2022 Lane Powell PC
Intellectual Property Review—Updates and Changes from 2021 1B–3Chapter 1B—Presentation Slides: 2021 Trademark Year In Review: Federal Courts
Ezaki Glico Kabushiki Kaisha v. Lotte Int'l Am. Corp.
• Ezaki Glico sued Lotte Int’l for infringement of its trade dress for the
shape of the Pocky cookie stick. D.N.J. entered summary judgment for
Glico. On appeal, Lotte argued that the trade dress is functional.
• Glico – “essential to use or purpose of an article” or “affects cost or
quality of the article.” (used in Second Circuit)
• Third Circuit – functional means useful. “A design is not functional if
all it does is identify its maker… But if a design gives a product an edge
in usefulness, then it is functional.”
• Third Circuit recognizes the two tests proposed by Glico but also points
to third test: “[A] feature is functional and unprotected if the ‘exclusive
use of [the feature] would put competitors at a significant non-
reputation-related disadvantage.’”
• Court says design makes cookies work better as a snack – handle and
compact shape better for eating, sharing, and packing in a box
• Glico itself advertises the “convenient design.”
• Alternative designs do not prevent functionality here.
14, Feb 14, 22 7 © 2022 Lane Powell PC
Sulzer Mixpac AG v. A&N Trading Co.
• Sulzer Mixpac suing A&N Trading for infringement of trade dress for “Candy
Color” color-coded dental adhesive mixing tips. S.D.N.Y. held trade dress was
non-functional because color adds to cost. A&N appealed and argued the
trade dress is functional.
• Sulzer Mixpac argued color is not essential to use, and it actually makes the
product more expensive to make.
• A&N did not dispute this, but argued color coding helps user identify useful
characteristics, such as size. Therefore, the color does affect the quality and
is essential to how the tips are intended to be used.
• Third Circuit did not agree that the feature was essential, but agreed color
affects quality. The functionality doctrine does not require that a product's
functional feature be the only reason why relevant consumers purchase it.
• Question on certiorari: “whether any degree of utility categorically renders a
product feature functional and thus ineligible for federal trademark
protection under the Lanham Act”
• Amicus curiae briefs in support of petition for certiorari from INTA International Anti-
Counterfeiting Coalition, Industrial Designers Society of America, Inc. and SWISSMEM,
and 3 law professors
14, Feb 14, 22 8 © 2022 Lane Powell PC
Intellectual Property Review—Updates and Changes from 2021 1B–4Chapter 1B—Presentation Slides: 2021 Trademark Year In Review: Federal Courts
Select Comfort Corp. v. Baxter
996 F.3d 925 (8th Cir. May 11, 2021)
• Plaintiff owns SLEEPNUMBER, SELECT COMFORT, COMFORTAIRE, etc. for beds. Defendants
sell beds at personalcomfortbed.com and via a call center.
• Defendants employed words or phrases identical or confusingly similar to Plaintiffs’
trademarks in various online advertising formats – domain names, search inquiry paid
terms, embedded links, text in advertisements.
• At summary judgment, D. Minn. Rejected, as a matter of law, theory of pre-sale confusion.
Case proceeded to trial on infringement, dilution, unfair competition and false advertising
claims, mixed verdict.
• 2010 case Sensient Techs. Corp. v. SensoryEffects Flavor Co. did not specifically adopt
initial interest confusion, but held no initial interest confusion where consumers were
sophisticated and purchased goods after a collaborative process.
• Here, Eighth Circuit officially adopted the theory, without overturning Sensient Techs. Result
– “when a jury question exists as to the issue of consumer sophistication, a plaintiff should
not be barred from proving presale, initial-interest confusion.”
• Sophisticated purchaser defense treated differently in other jurisdictions, e.g., Fed. Cir.,
Third Cir., N.D. Ill.
14, Feb 14, 22 9 © 2022 Lane Powell PC
Ironhawk Techs., Inc. v. Dropbox, Inc.
2 F.4th 1150 (9th Cir. April 20,2021)
• Ironhawk sued Dropbox for infringement of SMARTSYNC. C.D. Cal. granted summary
judgment to Dropbox, holding no reasonable jury could find that Ironhawk could
prevail. Ironhawk appealed on theory of reverse confusion.
• Ninth Circuit held summary judgment was inappropriate - genuine issues of material
fact remain as to the relevant consuming public and all Sleekcraft factors.
• District Court erred in finding commercial strength of Dropbox’s mark did not matter
because Ironhawk mark was “weak”
• District Court erred in analysis of how house mark DROPBOX interacts with SMART
SYNC
• Dropbox sophisticated consumer argument fails at summary judgment due to evidence
of actual confusion among the sophisticated consumers
• Dissent, Judge Tashima: Majority errs in failing to consider type of commercial
consumers, high degree of sophistication needed for purchases of Ironhawk’s product
14, Feb 14, 22 10 © 2022 Lane Powell PC
Intellectual Property Review—Updates and Changes from 2021 1B–5Chapter 1B—Presentation Slides: 2021 Trademark Year In Review: Federal Courts
Belmora LLC v. Bayer Consumer Care AG
987 F.3d 284, 293 (4th Cir. Feb. 2, 2021), cert. denied, 142 S. Ct. 483, 211 L. Ed. 2d 293 (Nov. 15,
2021)
• Bayer cancelled Belmora’s FLANAX registration in the U.S., and Belmora appealed. In another district,
Bayer sued Belmora under § 43(a) for infringement of FLANAX mark and under state law claims. Cases
were consolidated. On remand from earlier Fourth Circuit appeal, E.D. Va. granted summary
judgement to Belmora but affirmed cancellation of registration. Both parties appealed.
• E.D. Va. held that Bayer’s suit was time-barred. Lanham Act does not contain a defined statute of
limitations for § 43 claims, District Court used the most closely analogous statute of limitations under
state law.
• Fourth Circuit held laches applies for Bayer’s § 43 claim, not the state statute of limitations. (District
Court also failed to consider whether state law claims were tolled.)
• Laches is presumed to bar § 43(a) claims filed outside the analogous limitations period… But “whether
a Lanham Act claim has been brought within the analogous state statute of limitations is not the sole
indicator of whether laches may be applied in a particular case.”
• Fourth Circuit instructed District Court to consider two factors to determine if Bayer can overcome the
presumption: (1) whether Bayer knew of Belmora's adverse use of the FLANAX mark, (2) whether
Bayer's delay in challenging that use “was inexcusable or unreasonable,” and (3) whether Belmora
“has been unduly prejudiced” by Bayer's delay.
14, Feb 14, 22 11 © 2022 Lane Powell PC
Suzie's Brewery Co. v. Anheuser-Busch Companies, LLC
519 F. Supp. 3d 839 (D. Or. Feb. 9, 2021)
• Suit based on false advertising under §43(a) of the Lanham Act
• Order granting motion for TRO
• Applied the presumption of irreparable harm from the Trademark
Modernization Act of 2020
• Section 34(a) of the Lanham Act, 15 U.S.C. § 1116(a)
14, Feb 14, 22 12 © 2022 Lane Powell PC
Intellectual Property Review—Updates and Changes from 2021 1B–6Chapter 1B—Presentation Slides: 2021 Trademark Year In Review: Federal Courts
THANK YOU
Cassandra Mercer
mercerc@lanepowell.com
14, Feb 14, 22 13 © 2022 Lane Powell PC
Intellectual Property Review—Updates and Changes from 2021 1B–7Chapter 1B—Presentation Slides: 2021 Trademark Year In Review: Federal Courts Intellectual Property Review—Updates and Changes from 2021 1B–8
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